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Business names, company names, domain names, and trademarks

Written by Andrew O'Donnell, Director - Edney Ryan Legal 17Mar2013

Contrary to popular belief, business names, company names, domain names and trademarks all have very different levels of protection. In this article, we identify some of the common misconceptions.Neither business names nor company names grant any proprietary (ownership) rights like those granted by a trademark registration. By the same token, neither business names, company names, nor domain names, offer any form of protection against action for infringement of a registered trademark.

Company Names
Company names are names registered with ASIC merely to provide a legal identity for a company on a national basis.

To be registrable, a company name must not be “identical” to any other company, business or other name registered on the ASIC database (or other relevant databases). However, a name which is similar to a registered business name or company name, is not restricted from being registered as a company name. Therefore, this means that if you have received a company name registration, you will be the only business holding that exact name, but there may be many other businesses holding similar names.

In disputes where two names are very similar to each other, and the goods or services provided by the feuding businesses are similar, it is the trademark ownership, not the company name ownership, that will determine which party has the right to keep the name, and which will end up with a large costs bill on their hands.

Business Names
The purpose of registering a business name is to ensure that consumers and businesses that you deal with are able to identify who it is that is running that business. Having a registered business name does not give you ownership of the name or the exclusive right to use the name. Registering a business name:

does not stop another person from registering a similar name

will not prevent the name being registered as a trademark

will not prevent the name being used by someone that has already registered it as a trademark, and

does not protect you from legal action if the name of your business infringes the intellectual property rights of another (for example, a name which is a registered trademark).

As with the warning about company names, registration of a business name does not provide any legal rights in the use of that name. Business name registrations don’t provide any immunity from legal action against you for the use of that name.

Domain Names
As we all know, a domain name is an address for a location on the internet. Each type of name could be represented in many variations of domain names.

Domain name allocation rules have recently changed, and in the national and international arena, you may now be eligible to obtain a domain name matching your own trademark (registered, or in the process of a registration application) even if it is not your registered business name or company name. In the reverse, you can also potentially register your domain name as a trade mark.

But merely holding a domain name will not on its own provide you with any rights in relation to stopping other people using a similar name. There are varying restrictions on the right to hold domain names, however whilst you may have taken steps to ensure that you hold the .com or .com.au domain names for your business, it can be very difficult to stop your competitor down the road from registering a .net by the same name.

Trademarks
A trademark is a mark that distinguishes the goods or services of one trader from those of another. Trademarks can be many things – like a logo, picture, word, phrase, letter, number, sound, scent, or shape.

Trademark registration is a national registration, lasts indefinitely (for as long as the 10 year renewal fees are paid), and protection can commence even before you have actually commenced trade.

Unlike all of the other identifiers we have discussed above, trademark registration gives the registered owner exclusive rights in the use of that mark throughout Australia (in relation to the goods and services for which it is registered) – to use, licence and sell that mark.

The benefits of course from a trademark registration are those exclusive ownership rights that are provided to you – that neither business names, company names, nor domain name registration provides.

A trademark registration can make it much easier, cheaper and quicker for you to pursue others who are using your mark for similar goods/services. And simply holding it gives you much greater protection against the possibility of being sued by someone else for using that mark.

So remember, neither business names nor company names grant any proprietary (ownership) rights like those granted by a trademark registration. Furthermore, neither business names, company names, nor domain names, offer any form of protection against action for infringement of a registered trademark.